The Madras High Court’s decision in Softgel Healthcare Pvt. Ltd. v. Pfizer Inc. revisits the limits of cross-border judicial cooperation in patent litigation. Tharun Tomy analyses the Division Bench judgement and notes that the ruling draws a clear line on when Indian courts may refuse assistance to foreign courts seeking evidence through Letters Rogatory, while also pointing out a few misses in this otherwise well-reasoned order. Tharun is an advocate and PhD candidate at Inter University Centre for IPR Studies, Cochin University of Science and Technology.
Drawing the Line on What a Foreign Court Can Ask: Madras High Court Pushes Back on U.S. Letters Rogatory in the Softgel v Pfizer Appeal
By Tharun Tomy
On November 25, 2025, the Madras High Court delivered an important ruling in Softgel Healthcare Pvt. Ltd. v. Pfizer Inc. The Division Bench comprising Dr. Justice G. Jayachandran and Justice Mummneni Sudheer Kumar set aside a Single Judge’s order that had permitted execution of Letters Rogatory ( a request from the court of one country to the court of another seeking judicial assistance for collecting evidence) issued by the U.S. District Court for the District of Delaware in a patent-infringement action. The Division Bench held that Indian courts cannot give foreign courts judicial assistance for collecting evidence if it is for a pre-trial discovery (stage where parties exchange evidence and information before the commencement of the trial), which is vague or overly broad, or does not satisfy the specificity and sovereignty protections embodied in the Hague Evidence Convention. In this post, I will outline the issues raised before the Division Bench, its reasoning behind the decision, and identify the areas where the judgement falls short of fully addressing the issues.
Patent Clash Reaches Indian Shores
While the facts of the case have been discussed in the previous post by Praharsh, to quickly recap the controversy, the dispute stems from a patent infringement suit filed by Pfizer in the District Court of Delaware, alleging that Cipla and Zenara’s ANDA application for Vyndamax (Tafamidis) infringes its patent. Tafamidis is a drug that is used to treat adults with transthyretin amyloidosis. The Delaware Court had issued a letter rogatory to the Madras High Court requesting access to certain documents in possession of a third party, Softgel, which was a business partner of Cipla and Zenara. Previously, a single judge had allowed the request, directing the formation of a confidential club where the parties could share the relevant information. Aggrieved by the decision, Softgel filed an appeal against the Single Judge order.
A Hard Stop to Soft Requests
The central issue before the Division Bench was: “Whether the order passed by the Learned Single Judge is contrary to the Domestic law in India and the provisions of the Hague Convention?”The Court first examined Order XXVI Rule 19 of the Code of Civil Procedure, 1908, which expressly enables Indian courts to issue commissions for executing foreign Letters Rogatory. The Single Judge had relied heavily on this provision; however, the Division Bench made it clear in their decision that the provision must be read alongside Hague Evidence Convention 1970 and the position declared by India under that Convention. This was important as the Letters Rogatory issued in this case by the U.S. District Court for Delaware were issued pursuant to the Hague Convention. While assessing the case, the Division Bench analyzed four provisions of the Convention, starting with Article 3. Article 3 requires a high degree of specificity regarding the evidence sought. Although Pfizer argued that the request has enough specificity and is identifiable, the Court disagreed. The Division Bench found that the Letters Rogatory lacked the specificity required by Article 3. They were broad, omnibus in nature, and even included an open-ended category such as requests for “any further document deemed necessary” after reviewing the materials produced. The Court held that such sweeping language did not meet the specificity standards demanded by Article 3 of The Hague Convention. The Court then turned to Article 11, which allows a person to refuse to give evidence if, under the law of the executing State, in this case India, possesses a legal privilege or duty to withhold it. The Division Bench acknowledged this right of refusal by relying on the decision in M/s. Wooster Products Inc. v. M/s. Magna Tek Inc. and others (Delhi High Court 1988), which recognizes the right to refusal available to a witness under Indian law.
The Court then considered Article 12. This article allows a court to refuse execution of a Letter of Request if doing so would prejudice the sovereignty of the State of execution. While analyzing this provision, the Division Bench observed that a patent application for the same drug by Pfizer was refused by the Indian Patent Office, and an appeal against the rejection of that patent is pending. Therefore, compelling Softgel to reveal detailed information about its technical and manufacturing information could harm its position in existing or future domestic litigation. Surprisingly, here the Court also said that this would be prejudicial to Softgel’s domestic patent as well, but nowhere does the single judge or the DB order mention that Softgel had a patent on a similar invention. Neither does Softgel’s argument state this. This, however, seems like a typo, after reading the judgement in its entirety. Moreover, the Court opined that requiring such disclosure to support enforcement of a foreign patent, one that has no Indian equivalent and whose corresponding Indian application has been refused, would interfere with India’s policy decisions and the integrity of its patent system. The Court concluded that these concerns would prejudice India’s sovereignty under Article 12(b) of The Hague Convention.
The Court also considered Article 23 of The Hague Evidence Convention in its analysis. India, under Article 23, has provided a specific declaration stating that it will not execute requests for documents unless they are specific, as opposed to simply providing a general request for “any documents” in the possession of the party. In the case of Softgel, the list of documents sought was characterized by the Court as being in the nature of procuring pre-trial documents, and therefore, the Court found that the Letter of Request was clearly an attempt to obtain pre-trial documents. The Court ruled that the Learned Single Judge allowed the petitions without taking into account India’s declaration under Article 23 and the limitations that it sets forth.
The Court further reasoned that forcing non-parties to give up confidential material, especially one with potential parallel litigation interests, would constitute an abuse of process and violate both domestic and international legal protections. Pfizer relied on a Telangana High Court judgment in Pfizer Inc vs Teena Biolabs Pvt. Ltd., where the court ordered a non- party Indian entity to comply with Letters Rogatory issued in Pfizer’s favour. The division bench acknowledged this but distinguished this judgement from the case at hand by pointing out that the Telangana High Court had not considered India’s Article 23 declaration or its impact on pre-trial discovery.
In this judgment, the Division Bench departed from the approach taken by the Delhi High Court in Upaid Systems Limited v. Satyam Computer Servicesand the earlier Single Judge decision in Softgel, both of which treated the conditions under Order XXVI Rule 19 CPC as the sole threshold for executing foreign Letters Rogatory. The Division Bench emphasized that a purely textual reading of Rule 19 is insufficient because it ignores the broader framework of India’s international obligations and treaty reservations. Therefore, the court must ensure that, in addition to the three conditions set out in Rule 19, all Letters of Request must also conform to possible protective measures outlined in the Convention, specifically, Article 3, Article 12, and Article 23.
The Unanswered Questions
A closer analysis of the judgement shows that, although the issue framed by the Court was whether the order passed by the Single Bench was contrary to domestic law and the provisions of the Hague Convention, the Court did not fully engage with the first part of the issue. Instead, the Court moved quickly to emphasise the importance of complying with The Hague Convention and India’s declaration under it. The judgment does not consider whether Rule 19 itself allows the kind of evidence the respondents sought. When Rule 19 is read along with Rules 16 and 22, it becomes evident that a commissioner acting on a Letter Rogatory cannot compel the production or examination of documents. Rule 16 general provision that lists the powers of a commissioner, including examining parties and calling for documents, but Rule 22 expressly reveals that Rule 16 does not apply to commissions issued on the basis of Letters Rogatory. Further, Rule 19 speaks only of “obtaining the evidence of a witness,” and does not mention documents at all. Given this framework, the respondents’ prayer to appoint a commissioner for collecting documents from the appellant was not supported by Indian law, as Letters Rogatory cannot be used to gather documentary evidence.
Another aspect that the Court failed to look upon is whether the appellant could refuse the disclosure on the ground that they contain sensitive and confidential information protected under Article 39 of TRIPs. Since India is a TRIPs signatory, India must protect confidential information to prevent unfair competition. Softgel raised this concern in both the Single and Division Bench, but neither of them adequately addressed it. The Division Bench ignored it and the Single Bench dismissed it by saying that courts can order disclosure. However, the risk is real. Pfizer is appealing the rejection of its Indian patent application for the same drug that Softgel manufactures, and the disclosure could strengthen Pfizer’s case and ultimately block Softgel’s production (if patent is granted). Even though the outcome of the Division Bench favors Softgel, this factor remains important given the ongoing point.
Overall, Softgel is a strong judgement that provides a well-reasoned and timely decision that gives clarity about India’s obligations under The Hague Convention. The Division bench thoughtfully found a correct balance between comity and sovereignty, making it clear that cooperation cannot come at the cost of India’s legal safeguards. Importantly, the judgement put new standards for Letters Rogatory in India.
